Lovely Skin, Inc. v. Ishtar Skin Care Products, LLC

Filing 109

MEMORANDUM AND ORDER - Ishtar's motion to compel (Filing No. 83 ) is granted to the extent stated in this Memorandum and Order; 2) Lovely Skin shall have until December 16, 2011, to substantively respond to Requests for Production of Documents Nos. 32 and 37 ; 3) At Lovely Skin's discretion, any information filed with the Court as responses to Requests for Production of Documents Nos. 32 and 37 shall be filed under seal; and 4) No attorney fees and costs are awarded. Ordered by Senior Judge Lyle E. Strom. (JAB)

IN THE UNITED STATES DISTRICT COURT FOR THE
DISTRICT OF NEBRASKA
LOVELY SKIN, INC.,

)
)
Plaintiff,
)
)
v.
)
)
ISHTAR SKIN CARE PRODUCTS,
)
LLC.,
)
)
Defendant.
)
______________________________)

8:10CV87

MEMORANDUM AND ORDER

This matter is before the Court on the motion of
defendant Ishtar Skin Products, LLC (“Ishtar”) to compel
plaintiff Lovely Skin, Inc. (“Lovely Skin”) to comply with
various discovery requests (Filing No. 83, with accompanying
brief, Filing Nos. 84 and 85).

Lovely Skin has filed a brief in

opposition to the motion (Filing Nos. 87 and 88), to which Ishtar
has replied (Filing Nos. 101 and 102).
During a telephonic conference on December 5, 2011, the
parties’ counsel advised the Court that the only remaining issue
to be resolved regarding this motion to compel is that involving
“keyword” advertisements on Internet search engines; thus the
Court will address only this issue in its order.

The Court finds

that the motion to compel, regarding keyword advertisements on
Internet search engines, should be granted.
I.

Federal Rules of Civil Procedure 26(b) and 37(a).
"Mutual knowledge of all the relevant facts gathered by

both parties is essential to proper litigation."

Hickman v.

Taylor, 329 U.S. 495, 507 (1947).

Federal Rule of Civil

Procedure 26(b) allows for broad discovery of “any nonprivileged
matter that is relevant to any party’s claim or defense . . . .”
Fed. R. Civ. P. 26(b)(1).

Relevance during discovery is not

measured by the Federal Rules of Evidence:

“Relevant information

need not be admissible at the trial if the discovery appears
reasonably calculated to lead to the discovery of admissible
evidence.”

Id.

Relevance is to be broadly construed for

discovery issues and encompasses “any matter that could bear on,
or that reasonably could lead to other matter that could bear on,
any issue that is or may be in the case."

Oppenheimer Fund, Inc.

v. Sanders, 437 U.S. 340, 351 (1978).
However, the proponent of discovery must make “[s]ome
threshold showing of relevance . . . before parties are required
to open wide the doors of discovery and to produce a variety of
information which does not reasonably bear upon the issues in the
case."

Hofer v. Mack Trucks, Inc., 981 F.2d 377, 380 (8th Cir.

1992).

“Determinations of relevance in discovery rulings are

left to the sound discretion of the trial court . . . ."

Hayden

v. Bracy, 744 F.2d 1338, 1342 (8th Cir. 1984).
In the event of noncompliance with a discovery request
for relevant information, Rule 37(a) provides, “[A] party may
move for an order compelling disclosure or discovery.

The motion

must include a certification that the movant has in good faith
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conferred or attempted to confer with the person or party failing
to make disclosure or discovery in an effort to obtain it without
court action.”
II.

Fed. R. Civ. P. 37(a)(1).

Motion to Compel.
In this case, Lovely Skin alleges, among other things,

that Ishtar has infringed on its trademark “LovelySkin” and its
servicemark “LovelySkin.com” by operating a website “bearing the
name LivelySkin.com” (Complaint, Filing No. 1, at 1-2).

Ishtar

has asserted several affirmative defenses and counterclaims
(Filing No. 41).

Ishtar now requests that this Court grant a

motion to compel Lovely Skin “to fully respond to Requests for
Production of Documents No. 32 and 37" (Filing No. 83, at 2),
which read as follows:
REQUEST NO. 32:
All documents referring or relating
to purchasing of keywords, “Ad
Words,” “sponsored links,” or other
advertisements for search engines
and any efforts to achieve search
prominence on search engines,
including but not limited to Your
purchase, or consideration to
purchase, the name “Lively Skin” or
the URL www.livelyskin.com.
REQUEST NO. 37:
Documents referring or relating to
communications with Google to
purchase “lively skin” and
“livelyskin.com” as keywords or
“Adwords.”

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(Ex. 2, Filing No. 85, at 3-4).

Ishtar has documented with the

Court that it has satisfied the discovery motion “meet and
confer” requirement of Rule 37(a) and local rule 7.0.1 (Filing
No. 84, at 7).
Lovely Skin asserts that “with all reasonable effort,
[it] has complied” with Ishtar’s requests (Filing No. 87, at 2).
First, with regard to the search engine “BING,” Lovely Skin
claims that it “provided account statements from Microsoft
adCenter Keywords from January 2010 to present which lists each
adword campaign and the amount spent for each campaign” (Filing
No. 87, at 2).
Second, with regard to the search engine Google, Lovely
Skin claims that it provided to Ishtar “information as to which
adword was purchased, the number of clicks generated from the
adword, the average cost per click, as well as the cost for each
adword . . . . [and] the total amount spent for the purchase of
adwords on Google” (Id.)

In addition, Lovely Skin claims that it

provided Ishtar “information indicating the time period Plaintiff
purchased the adword Lively Skin, the number of clicks generated
from the purchase of the adword and the cost . . .” (Id. at 3).
Third, with regard to the search engine Yahoo, Lovely
Skin claims that it “has been unable to retrieve documents from
Yahoo that specifically indicate which adwords were purchased
despite its efforts to obtain this information,” but Lovely Skin

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did provide billing statements regarding its Yahoo advertising
(Id. at 2-3).
In support of its motion to compel, Ishtar states that
Lovely Skin’s production of documents in response to these
requests are “deficient for two reasons” (Filing No. 101, at 1).
First, the Google information lacks the dates that the keywords
were used, which are necessary to establish “(1) whether Lovely
Skin’s marks had achieved secondary meaning when Ishtar entered
the market; and (2) the extent of Lovely Skin’s inequitable use
of the term “livelyskin” in its keyword advertising campaigns”
(Id. at 2).

Second, Ishtar claims that as a result of its recent

Internet searches, Ishtar has learned that “Lovely Skin possesses
additional information regarding keyword purchases made by Lovely
Skin through other search engines” (Id.).
The Court finds that the information sought by Ishtar
is relevant to its affirmative defenses of the claims made
against it by Lovely Skin.

The Court will grant the motion to

compel as to Requests for Production of Documents Nos. 32 and 37.
Lovely Skin shall comply with this order by December 16, 2011.
III.

Attorney Fees and Costs.
Federal Rule of Civil Procedure 37(a)(5)(A) provides:
If the motion [to compel] is
granted -- or if the disclosure or
requested discovery is provided
after the motion was filed -- the
court must, after giving an
opportunity to be heard, require
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the party or deponent whose conduct
necessitated the motion, the party
or attorney advising that conduct,
or both to pay the movant’s
reasonable expenses incurred in
making the motion, including
attorney’s fees. But the court
must not order this payment if
. . . . (ii) the opposing party’s
nondisclosure, response, or
objection was substantially
justified . . . .
Fed. R. Civ. P. 37(a)(5)(A).

Although Lovely Skin failed to

provide adequate discovery responses, which, in turn, caused
Ishtar to file this motion to compel, the Court finds that Lovely
Skin’s objections were “substantially justified” under the
circumstances.
costs.

Thus, the Court will not award attorney fees and

Accordingly,
IT IS ORDERED:
1) Ishtar’s motion to compel (Filing No. 83) is granted

to the extent stated in this Memorandum and Order;
2) Lovely Skin shall have until December 16, 2011, to
substantively respond to Requests for Production of Documents
Nos. 32 and 37;
3) At Lovely Skin’s discretion, any information filed
with the Court as responses to Requests for Production of
Documents Nos. 32 and 37 shall be filed under seal; and

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4) No attorney fees and costs are awarded.
DATED this 6th day of December, 2011.
BY THE COURT:
/s/ Lyle E. Strom
______________________________
LYLE E. STROM, Senior Judge
United States District Court

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